USPTO Patents Application 09740559

D02311

PATENT

REMARKS/ARGUMENTS

Claims 9-13 were pending in this application before the present response. The
Examiner did not enter the informal or non-responsive amendments filed on June 20,
2006, October 25, 2006, November 21, 2006, March 1, 2007 and April 19, 2007.
Accordingly, the amendment filed on December 7, 2005 with a Request for Continued
Examination was the last amendment entered. Applicants thank the Examiner for
providing detailed reasons for non-compliance, and have addressed them in the present
amendment.

In the Office Action dated March 6, 2006, claims 9-13 stand rejected under 35
U.S.C. § 1 12, second paragraph. Claims 9-11 and 13 stand rejected under 35 U.S.C. §
102(b) as being anticipated by U.S. Patent No. 5,420,866 ("Wasilewski"). Claim 12
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Wasilewski in view
of U.S. Patent No. 5,619,250 ("McClellan").

Applicant herein requests the cancellation of claims 1 1 and 13, and presents new
claims 27-29 for consideration. Claims 9, 10, and 12 are amended herein. No new
matter has been introduced into the apphcation.

Claims 9, 10, 12 and 27-29 are now pending in the apphcation. Applicants
respectfully request reconsideration of claims 9, 10, and 12, and allowance of all pending
claims, in view of the amendments and following remarks.

Claim Rejections - 35 U.S.C. $ 112

The Examiner rejected claims 9-13 under 35 U.S.C. § 1 12, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which the apphcant regards as the invention. The Examiner cited the use of the phrase
"based, at least in part upon" as the root of the indefinite nature of Claim 9 (from which
the rejected claims depend).

The basis for the Examiner's rejection is fully appreciated by the Applicants, and
Claim 9 has been amended accordingly. As amended, the offending phrase has been
replaced by a direct and definite recitation requiring the blocking of the receipt of a
message to be a function of a determination that a receiver is authorized.

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PATENT

It is believed that this amendment cures Claim 9 of its indefinite wording
problem, and the Examiner is respectfully requested to reconsider this rejection with
respect to the amended claim, claims 10 and 12 which depend thereon, and new claims
27-29 which depend thereon.

Claim Rejections - 35 U.S.C. $ 102

The Examiner rejected claims 9-13 as being anticipated under 35 U.S.C. § 102(b)
by Wasilewski. With respect to Claim 9 (the only pending independent claim), the
Examiner reiterated the previously rendered rejection, citing the manner in which
Wasilewski could be seen as disclosing all of the aspects of Claim 9. While Applicants
do not believe that the instant invention is disclosed by Wasilewski, they do believe they
understand the basis for the Examiner's rejection of that claim, and that the issue is the
improper wording of Claim 9 by the Applicants, rather than the anticipation of the
disclosed invention by Wasilewski.

In particular, the Applicants suggest to the Examiner that the disclosed invention
should rightfully be claimed as a method directed to the conditional access of a separately
received message within a conditional access system, and Claim 9 has been amended
accordingly. Contrastingly, Wasilewski discloses a system for the provision of encrypted
information to a set of decoders in a conditional access system, wherein the encryption
information is specific to the particular "stream" of information in which it is inserted
(col. 5, line 31 - col. 6, line 17).

All presently requested amendments to Claim 9 are fully supported by the
Applicants' originally submitted application. The Examiner is respectfully requested to
reconsider the rejection of this claim in light of these amendments.

Applicants have also requested that Claims 10 and 12 be amended so that they are
brought into conformance with presently amended Claim 9. Herewith, Applicants also
submit new Claims 27-29 (again, all fully supported by the original specification). All of
these dependent claims are believed by Applicants to be readily distinguishable from
Wasilewski.

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Claim Rejections - 35 U.S.C. $ 103

Claim 12 was rejected as unpatentable under 35 U S.C. § 103 over Wasilewski in
view of McClellan. In doing so, the Examiner relied upon Wasilewski for the disclosing
of all of the aspects of Claim 9, except for the inclusion of a "software program".

As discussed above, Wasilewski does not anticipate presently amended Claim 9,
and therefore a combination of Wasilewski and McClellan does not serve to make
obvious dependent claim 12. Since McClellan fails to supply features missing from
Wasilewski, the combination of Wasilewski and McClellan cannot suggest the invention
and cannot render the claims obvious. Thus, no matter how Wasilewski and McClellan
may be combined (even assuming, arguendo, that one of ordinary skill in the art would be
led to combine them) the resulting combination is not the invention recited in claim 12.

Therefore, Applicants submit that claim 12 is patentable over Wasilewski in view
of McClellan, and request that this rejection be withdrawn.

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Conclusion

In view of the foregoing discussion, it is believed that claims 9, 10, 12 and 27-29
are allowable over the cited art. Applicants respectfully submit that all pending claims,
as amended, are in condition for allowance, and earnestly request that all objections and
rejections of the claims be withdrawn and a Notice of Allowance be entered at the earliest
date possible.

Should the Examiner feel that there are any issues outstanding after consideration
of this response, the Examiner is invited to contact Applicants' undersigned
representative to expedite prosecution.

Respectfully submitted,
BRIDGET D. KIMBALL, et al.

Date: November 16. 2007 BY: /Stewart M. Wiener/

Stewart M. Wiener
Registration No. 46,201
Attorney for Applicants

MOTOROLA, INC.
101 Tournament Drive
Horsham, PA 19044
Telephone: (215)323-1811
Fax: (215) 323-1300

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